Appeal 2007-0612
Application 09/838,866
The Examiner states that “the Examiner believes the [Appellant’s] metal
matrix composite is defined as a material being formed by molten metal selected
from of [sic] aluminum, magnesium, titanium and mixtures thereof” (Answer 4).
The Examiner is incorrect. As set forth in the Appellant’s independent claims (1
and 9) the metal matrix composite has a component in addition to the molten
metal, i.e., particles of silicon boride composition.
The Examiner argues that “it would have been obvious to combine Eom
with Weaver for a teaching of silicon boride composition to make the metal
material stronger in the horseshoe of Eom” (Answer 5). Eom, however, desires
abundant ductility to permit the horseshoe to be shaped to fit diverse hoof sizes
(col. 1, ll. 27-31; col. 3, ll. 7-10). The Appellant’s claims require as little as about
0.1 wt% silicon boride composition. The Examiner, however, has not provided
evidence or technical reasoning which shows that there is any amount of silicon
boride composition, whether about 0.1 wt% or more, that will increase the strength
of Eom’s metal alloy without taking away the desired ductility.
Hence, the Examiner has not established a prima facie case of obviousness
of the Appellant’s claimed invention over the combined disclosures of Eom and
Weaver.
Remand
We remand the application to the Examiner for the Examiner to consider
rejecting the Appellant’s claims under 35 U.S.C. § 103 over the Appellant’s
admitted prior art in view of Weaver.
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